Michael A. Grow of the firm Vorys, Sater, Seymour and Pease for applicant.

David C. Reihner

Trademark Examining Attorney

Law Office 12

(Deborah S. Cohn, Managing Attorney)

Before Rice, Simms and Seeherman

Members

Opinion by Simms

Member

Women's Publishing Co., Inc. (applicant), assignee of Grass Roots Publishing Co., Inc., has appealed from the final refusal of the Trademark Examining Attorney to register the mark DECORATING DIGEST for magazines. [FN1] The Examining Attorney has refused registration of applicant's mark, sought to be registered on the Principal Register, under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), because applicant's mark is assertedly "so highly descriptive of applicant's magazine that it is incapable of acting as a trademark."

We hold that applicant's mark is merely descriptive of its goods but that applicant's evidence establishes that the mark DECORATING DIGEST has become distinctive of applicant's magazines and is therefore registrable under Section 2(f) of the Act, 15 USC 1052(f).

Applicant has summarized its argument as follows:

When Applicant's mark DECORATING DIGEST is viewed in its entirety, it is evident that the mark is at most suggestive of the goods (magazines) on which it is used. While Applicant's magazine does contain articles about decorating, it also contains articles on numerous other subjects, including crafts, gift ideas, furniture building and shopping advice. Also, Applicant's magazine is not a digest in the literal sense of the word. The magazine is not a literary abridgement or summation or condensation of previously published articles. Thus, as applied to Applicant's good [sic] use of "DIGEST" in connection with DECORATING is incongruous and is, therefore, not descriptive. In addition the double use of the letter "D" as the first consonant in both components of Applicant's mark is an alliteration which adds additional distinctiveness to the mark.

Most importantly, however, the proliferation of publications incorporating the term "DIGEST" has accustomed the general public to recognize that "DECORATING DIGEST" and numerous other well-known magazines, such as "Readers Digest," and "Architectural Digest" are capable of operating as source indicators. Federal registrations for the mark "Readers Digest" and the numerous other marks incorporating the term "DIGEST" have been made part of the record.

(Applicant's brief, 5.)

Applicant also argues that, even if these words are considered merely descriptive, the evidence of secondary meaning submitted by applicant is sufficient to show that its mark has become distinctive of its magazines. Briefly, this evidence includes affidavits of its president (who attests to first use of the mark in connection with solicitation of subscriptions in December 1986, the fact that millions of people have been contacted by direct mail and telephone solicitation and over 600,000 people have subscribed to applicant's magazine with sales of over $7.5 million), affidavits of officials of Publishers Clearing House and American Family Publishers (who attest to the fact that applicant's mark has been featured in promotions since 1986 and in millions of offers to subscribe, reaching nearly all adult residents of the United States, and that hundreds of thousands of households have responded by so subscribing); an affidavit of applicant's vice president (attesting to the fact that the mark has been the subject of continuous and extensive advertising for years) and the affidavits of a number of individuals who have distributed or received applicant's magazine and who recognize the mark sought to be registered as identifying and distinguishing applicant's goods from those of others.

*2 While the Examining Attorney has denied that his holding is one of genericness, we believe that in this case the Examining Attorney's holding that the term is "so highly descriptive that it is incapable of acting as a trademark" is, in effect, a holding of genericness. [FN2] See In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991). The Examining Attorney's position is apparently that, because the asserted mark is not the generic name for the goods but only an expression that names them, the asserted mark cannot be labelled "generic." (Brief, 14) We do not believe that this is the law. A product may have more than one generic name and all the generic names belong in the public domain and are unregistrable. See, for example, In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (Rich., J., concurring) (CCPA 1970).

The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus (category or class) of goods or services in question. H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986). [FN3]

The evidence of genericness offered by the Examining Attorney, aside from the dictionary definitions of the words making up applicant's mark, consists of Nexis excerpts wherein appear the words "decorating magazines," "decorating books" and "decorating publications." We could find no appearances of the term "decorating digest" per se. We agree with applicant that the Examining Attorney has not produced sufficient evidence that the public would understand DECORATING DIGEST to refer to a class of magazines. Rather, considering all of the evidence of record, it appears to us that the primary significance to the relevant public of the words DECORATING DIGEST is a magazine published by applicant and not a generic expression for applicant's magazine.

In reaching this conclusion we have considered the fact (as noted above) that there is of record no evidence that competitors use these words to describe their publications. This fact does tend to bolster applicant's contention that the public has come to identify the mark with applicant's publication. We have also reviewed the numerous third-party registrations of record, which issued on the Principal Register, of marks which are analogous to applicant's, most without disclaimers. These include: FOOD DIGEST, BLACK CONSUMER DIGEST, BUYERS PURCHASING DIGEST, COOKBOOK DIGEST (now owned by applicant), SHIPPING DIGEST, WOODWORKING & FURNITURE DIGEST, VETERINARY DIGEST, LAND USE DIGEST, GAMBLER'S DIGEST, SPORTS DIGEST, DISCOUNTERS DIGEST, INVESTMENT DEALERS DIGEST, BOATING DIGEST, BASEBALL DIGEST, MEDICAL RESEARCH DIGEST, BEVERAGE DIGEST, CONSTRUCTION DIGEST, EMPLOYERS' DIGEST etc. While superficially it may be easy to dismiss these registrations, as we often do, on the basis that the records of those registrations are not before us and that each case must be decided on its own merits, it certainly does appear that the Office has in the past taken a different position with respect to marks of the nature of applicant's. Suffice it to say that Office practice has resulted in inconsistent treatment of magazine titles which are very similar in nature to applicant's.

*3 Although we do not believe that applicant's mark rises to the level of genericness, we do believe that each of the components is merely descriptive and that the combination is also merely descriptive. The word "DECORATING" clearly describes the subject matter of applicant's publication. Moreover, while it is true that applicant's magazine is not technically a "digest" of condensed articles previously published, applicant has sought registration for "magazines" generally. Such a description obviously includes magazines which are literally digests. Accordingly, if applicant were to change the format of its publication, the mark as a whole would merely describe the nature of the publication.

We have reviewed applicant's evidence of acquired distinctiveness, including the affidavits relating to the promotion and use of the mark over the years and the affidavits of individuals who state that they recognize applicant's mark as identifying and distinguishing applicant's magazines from those of others. We agree with applicant that its evidence of extensive and successful use and promotion of the mark DECORATING DIGEST demonstrates, at least prima facie, that these words have become distinctive of applicant's magazines and that they are registrable on the Principal Register.

Finally, and in accordance with precedent, we must resolve any reasonable doubt in favor of applicant in these kinds of cases. See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed.Cir.1987).

FN2. The Examining Attorney's refusal that applicant's mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic. See, for example, In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 962 (Fed.Cir.1985), Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (CCPA 1961), In re Deutsche Airbus GmbH, 224 USPQ 611 (TTAB 1984) and Conde Nast Publications Inc. v. Redbook Publishing Co., 217 USPQ 356, 360 (TTAB 1983). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant's showing of acquired distinctiveness is unpersuasive of registrability.

FN3. As the court has acknowledged, it is difficult to lay down one test in these kinds of cases. See, for example, In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.Cir.1987).